Time Warner Cable Enterprises LLC

Patent Trials and Appeals Board

Aug 2, 2021

2020002572 (P.T.A.B. Aug. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/900,928 02/21/2018 Albert Straub TWC15-10(15-28C1)CON 4334
156874 7590 08/02/2021
Armis Intellectual Property Law, LLC
P.O. Box 1564
Westborough, MA 01581
EXAMINER
CHAO, MICHAEL W
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
08/02/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chris.lutz@armisiplaw.com
docket@armisiplaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALBERT STRAUB, JOHN CHEN, and THOMAS GONDER
____________

Appeal 2020-002572
Application 15/900,928
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3–27, 29, and 30, which are all the claims pending and
rejected in the application. Claims 2 and 28 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Time Warner Cable Enterprises LLC as the real party in
interest. Appeal Br. 2.

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STATEMENT OF THE CASE
Introduction
The present invention relates to “a novel way of managing recordings
of encrypted content as well as corresponding (decryption) key information
needed to decrypt the recorded content.” Spec. 2:7–9.
as an illustrative example, . . . a user operated communication
device . . . receives input from a respective user identifying
content to be recorded. To record the selected content, the user
operated communication device receives first content access
information (such as manifest file information) indicating one or
more resources from which to retrieve encrypted segments of the
selected content. . . . the first content access information further
specifies resources such as corresponding one or more locations
from which to retrieve original decryption key information . . .
needed to decrypt the retrieved segments of encrypted content.
As specified by the first content access information, the user
operated communication device retrieves the segments of
encrypted content and further initiates storage of the retrieved
segments of encrypted content in a first repository for later
retrieval.

Spec. 2:11–21. Independent claims 1, 11, and 21 are exemplary:
1. A method comprising:
utilizing first content access information to retrieve: i)
segments of encrypted content associated with a request, and ii)
copies of original decryption keys to decrypt the segments of
encrypted content;
storing the segments of encrypted content and the copies
of original decryption keys for later retrieval; and
producing second content access information to provide a
mapping between the stored segments of encrypted content and
the stored copies of original decryption keys.

11. A system comprising:
a server resource from which to distribute content;
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gateway hardware to provide a subscriber access to the
server resource; and
computer processor hardware operable to:
utilize first content access information to retrieve
segments of encrypted content associated with a request for
recording of content;
store the segments of encrypted content for later retrieval;
and
produce second content access information to provide a
mapping between the stored segments of encrypted content and
copies of original decryption keys to decrypt the stored segments
of encrypted content.

21. Computer-readable storage hardware having instructions
stored thereon, the instructions, when carried out by computer
processor hardware, cause the computer processor hardware to:
utilize first content access information to retrieve i)
segments of encrypted content associated with a request, and ii)
copies of original decryption keys;
store the segments of encrypted content for later retrieval;
and
produce second content access information to provide a
mapping between the stored segments of encrypted content and
the copies of original decryption keys.

References and Rejections2
Claims Rejected 35 U.S.C. § References
1, 3–27, 29, 30 101 Patent Ineligible Subject Matter
6, 7, 16, 17, 26 112(b) Indefiniteness
1, 3–27, 29, 30 Non-statutory Double Patenting
over claims of Straub (US
9,917,690 B2, Mar. 13, 2018)

2 Throughout this opinion, we refer to the (1) Final Office Action dated
Oct. 5, 2018 (“Final Act.”); (2) Supplemental Appeal Brief dated Feb. 12,
2020 (“Appeal Br.”); (3) Examiner’s Answer dated Dec. 12, 2019 (“Ans.”);
and (4) Reply Brief dated Feb. 12, 2020 (“Reply Br.”).
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11, 14–16, 18–
213
102(a)(2) Rothschild (US 2014/0237520 A1,
Aug. 21, 2014)
1, 3–6, 8–10, 12–
13, 22–27, 29, 30
103 Rothschild and Wang et al.,
Managing Digital Rights for P2P
Live Broadcast and Recording on
the Internet, IEEE Transactions on
Multimedia, vol. 14, 1538–45
(2012) (“Wang”)
7, 9, 264 103 Rothschild, Wang, and Burns (US
2012/0150812 A1, June 14, 2012)
17, 195 103 Rothschild and Burns
8–10 103 Rothschild, Wang, and Britt (US
2008/0092181 A1, Apr. 17, 2008)
18–20 103 Rothschild and Britt

ANALYSIS

35 U.S.C. § 112(b)
Appellant does not contest the indefiniteness rejection. Thus, we
summarily sustain the Examiner’s 35 U.S.C. § 112(b) rejection of claims 6,
7, 16, 17, and 26. See 37 C.F.R. § 41.37(c)(1)(iv) (“any arguments . . . not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal”); Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (“[w]hen the appellant fails to contest a ground of rejection
to the Board, . . . the Board may treat any argument with respect to that
ground of rejection as waived”); see also Manual of Patent Examining
Procedure § 1205.02 (9th ed., rev. 10.2019, June 2020) (“If a ground of

3 The headings for many rejections in the Final Action list claims
incorrectly, which appear to be typographical errors. The lists in this table
correct such typographical errors.
4 Claim 28 was withdrawn after the Final Action.
5 The Examiner rejects some claims on alternative grounds.
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rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).6

Double Patenting
Appellant does not contest the non-statutory double patenting
rejection. Thus, we summarily sustain the Examiner’s non-statutory double
patenting rejection of claims 1, 3–27, 29, and 30 over claims 1–20 of Straub.
See 37 C.F.R. § 41.37(c)(1)(iv); Hyatt, 551 F.3d at 1314; see also Manual of
Patent Examining Procedure § 1205.02 (9th ed., rev. 10.2019, June 2020).

35 U.S.C. § 101
We disagree with Appellant’s arguments. To the extent consistent
with our analysis below, we adopt the Examiner’s findings and conclusions
in (i) the action from which this appeal is taken and (ii) the Answer.
To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
The Examiner rejects the pending claims under 35 U.S.C. § 101
because they are directed to patent-ineligible subject matter. See Final Act.
4–6; Ans. 6–11, 14–18. In particular, the Examiner concludes the claims are

6 In the event of further prosecution, we leave it to the Examiner to
determine whether “the fourth locations” and “the second locations” of
claim 26 lack proper antecedent basis, thus rendering claim 26 indefinite.

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directed to the abstract idea of mental processes (Final Act. 4–5; Ans. 6, 16).
The Examiner also determines the claims do not identify an inventive
concept to transform the claims into a patent-eligible application. See Final
Act. 5–6; Ans. 7–8, 16–17. Appellant argues the Examiner erred. See
Appeal Br. 13–14; Reply Br. 2–14.
Appellant has not persuaded us of error.

Legal Principles
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In 2019, the PTO published revised guidance on the application of
§ 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); Manual of Patent Examining
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Procedure (9th ed. Rev. 10.2019, June 2020) (MPEP) §§ 2106.03–
2106.07(c) (“Guidance”). Under the instruction set forth in the Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(9th ed. Rev. 10.2019, June 2020) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56; MPEP §§ 2106.04–05.

Step 2A, Prong 1
Turning to Step 2A, Prong 1 of the Guidance, independent claims 1,
11, and 21 recite (with emphases added):
1. A method comprising:
utilizing first content access information to retrieve: i)
segments of encrypted content associated with a request, and ii)
copies of original decryption keys to decrypt the segments of
encrypted content;
storing the segments of encrypted content and the copies
of original decryption keys for later retrieval; and
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producing second content access information to provide a
mapping between the stored segments of encrypted content and
the stored copies of original decryption keys.

11. A system comprising:
a server resource from which to distribute content;
gateway hardware to provide a subscriber access to the server
resource; and
computer processor hardware operable to:
utilize first content access information to retrieve segments of
encrypted content associated with a request for recording of
content;
store the segments of encrypted content for later retrieval;
and
produce second content access information to provide a
mapping between the stored segments of encrypted content and
copies of original decryption keys to decrypt the stored segments
of encrypted content.

21. Computer-readable storage hardware having instructions
stored thereon, the instructions, when carried out by computer
processor hardware, cause the computer processor hardware to:
utilize first content access information to retrieve i) segments
of encrypted content associated with a request, and ii) copies of
original decryption keys;
store the segments of encrypted content for later retrieval;
and
produce second content access information to provide a
mapping between the stored segments of encrypted content and
the copies of original decryption keys.

Contrary to Appellant’s arguments (Appeal Br. 13–14; Reply Br. 2–5,
9–10), the italicized processes and functions are like the mental processes in
CyberSource and Synopsys, because they can be performed by a person
using a pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372–73 (Fed. Cir. 2011) (“All of claim 3’s method steps can be
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performed in the human mind, or by a human using a pen and paper. . . .
Such a method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under § 101.”); Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“[W]e
continue to ‘treat[ ] analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.’”) (citation omitted); see
also Final Act. 4–5; Ans. 6, 16.
For example, claim 1 recites “utilizing first content access information
to retrieve: i) segments of encrypted content associated with a request, and
ii) copies of original decryption keys to decrypt the segments of encrypted
content.” According to the exemplary embodiments of the Specification,
“content access information 185-1 . . . includes manifest information
indicating locations from which to retrieve segments of encrypted content
associated with the requested content 110 as well as corresponding locations
from which to retrieve corresponding decryption key information.” Spec.
11:25–28. “In one embodiment, the content access information 185-1
indicates where corresponding segments of encrypted content 110 are
available for retrieval.” Spec. 10:26–27. “More specifically, the content
access information 185-1 . . . includes resource locators (such as one or more
pointers . . .) indicating locations of relevant information.” Spec. 10:22–25.
Therefore, content access information 185-1 includes data to indicate
“locations from which to retrieve segments of encrypted content associated
with the requested content 110 as well as corresponding locations from
which to retrieve corresponding decryption key information.” Spec. 11:25–
28. As a result, a person can read information (the claimed “content access
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information”) from a paper directory, and uses the information to find pieces
of paper stored in various locations. One paper contains written information
that is coded (such as “Δαβ”), and another paper contains written keys for
the coded information (such as “Δ” corresponds to “n,” “α” corresponds to
“e,” and “β” corresponds to “w”; as result, “Δ α β” corresponds to the word
“new”). In short, a person can use a pen and paper to “utiliz[e] first content
access information to retrieve: i) segments of encrypted content associated
with a request, and ii) copies of original decryption keys to decrypt the
segments of encrypted content.” Claim 1.
With respect to the limitation “storing the segments of encrypted
content and the copies of original decryption keys for later retrieval,” a
person can keep the pieces of paper in their current locations or move them
to different locations for storage and later retrieval. Our assessment is
consistent with the Specification, which explains a user may store the
relevant data for later retrieval. See Spec. 10:17–19 (“the content access
information 185-1 enables a respective user to retrieve a sequence of
multiple segments of encrypted content for . . . storage”); Spec. 12:5–7
(“utilizing the resource locators in the content access information 185-1 to
retrieve the segments of encrypted content as well as initiate storage of the
corresponding decryption key information 112 for later retrieval”).
Regarding the limitation “producing second content access
information to provide a mapping between the stored segments of encrypted
content and the stored copies of original decryption keys,” a person can
update the paper directory by using a pen to write down the new locations of
the papers with the coded information and associated key for decoding. Our
assessment is consistent with the Specification, which explains a user may
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produce new information (data) to provide the relevant mapping
information:
the content access information 185-2 bears a resemblance to the
content access information 185-1. For example, both content
access information 185-2 and content access information 185-1
include instructions enabling play back of corresponding content
110 on display screen 130 of the communication device 120-1.
However, because the encrypted content 110 may no longer be
available from server resource 195-1 at a later time,
embodiments herein include creating content access information
185-2 indicating new locations of recorded segments of
encrypted content as well as corresponding decryption key
information for playing back the content at a later time.
Spec. 15:20–28.
For similar reasons discussed above with respect to claim 1, a person
can perform the italicized functions and processes of independent claims 11
and 21.
Therefore, we conclude each of claims 1, 11, and 21 recites mental
processes, and thus an abstract idea. See Guidance, Step 2A, Prong 1
(Groupings of Abstract Ideas); Guidance, 84 Fed. Reg. at 52, 53 (listing
“[m]ental processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion)” as one of the “enumerated
groupings of abstract ideas” (footnotes omitted)); Guidance, 84 Fed. Reg. at
52 n.14 (“If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”).

Step 2A, Prong 2
Turning to Step 2A, Prong 2 of the Guidance, contrary to Appellant’s
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arguments (Appeal Br. 13–14; Reply Br. 10–11), the independent claims do
not recite additional elements that integrate the judicial exception into a
practical application. In particular, Appellant’s arguments that “[t]he
claimed invention is directed a practical application of managing encrypted
content and decryption keys via content access information and providing
later retrieval of same [sic] using second content access information . . . the
claims do provide a beneficial way of managing protection of encrypted
content and encryption keys” (Reply Br. 11; see also Appeal Br. 13–14) are
unpersuasive because “a claim for a new abstract idea is still an abstract
idea.” Synopsys, 839 F.3d at 1151. “[U]nder the Mayo/Alice framework, a
claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
As discussed above, claim 1 does not include any additional elements,
as all of the processes of claim 1 are part of the mental processes.
Independent claim 11 recites “a server resource from which to distribute
content; gateway hardware to provide a subscriber access to the server
resource; and computer processor hardware operable to” perform functions
similar to the abstract processes of claim 1. Similarly, independent claim 21
recites a “[c]omputer-readable storage hardware having instructions stored
thereon, the instructions, when carried out by a computer processor
hardware, cause the computer processor hardware to” perform processes
similar to the abstract processes of claim 1.
As explained by the Specification, the additional elements were well-
known computer devices:
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any of the resources as discussed herein can include one or
more computerized devices, servers, base stations, wireless
communication equipment, communication management
systems, workstations, handheld or laptop computers, or the
like to carry out and/or support any or all of the method
operations disclosed herein. In other words, one or more
computerized devices or processors can be programmed and/or
configured to operate as explained herein to carry out different
embodiments of the invention.

Spec. 5:7–13; see also Ans. 9–10 (finding the additional elements
were well known).
Further, the additional elements of “a server resource” and “gateway
hardware” (claim 11) are not even linked to the abstract idea. See claim 11.
Instead, they merely perform the basic functions of distributing data and
accessing resources (“a server resource from which to distribute content;
gateway hardware to provide a subscriber access to the server resource”).
As a result, “the focus of the patentee and of the claims was not on an
improved [gateway hardware] or an improved server.” TLI Commc’ns LLC
v. AV Auto, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016).
While not required, the Examiner also finds—and Appellant does not
dispute—the claimed “encrypted content” and “copies of original decryption
keys to decrypt the segments of encrypted content,” which are part of the
abstract idea, were well known. See Final Act. 5; Ans. 8–9 (citing
Background section of Burns, Field of Art section of Penugonda).
Content streaming is becoming an increasingly common
way for providing content to a client. In some cases, digital rights
management (DRM) technologies such as encryption may be
employed to control access to content. For the case of
cryptographic encryption, the content may be cryptographically
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encrypted with a cryptographic key, and the encrypted content
may then be streamed to the client.

Background section of Burns (emphasis added)

The Digital Video Broadcasting (DVB) standard, ETSI TS
103 197 v1.5.1 (2008 October) offers a technique for producing
and consuming a control word and associated entitlement
control message (ECM) for one cryptographic period (also
referred to herein as a crypto period) at a time. A control word
may be a secret key that may be used to scramble a clear media
stream at an encryption device such as, for example, an
Encryptor, an Edge Quadrature Amplitude Modulation
modulator (EQAM) with an embedded encryptor, a Converged
Cable Access Platform (CCAP) device with an embedded
encryptor, computer, and/or other computing device, and to
descramble a scrambled media stream (e.g., a channel) at a
receiver device such as, for example, a set-top box, computer,
tablet, and/or other computing device.
Field of Art section of Penugonda (1:23–27) (emphasis added).
Therefore, we conclude each of claims 1, 11, and 21 is directed to the
mental processes of using access information to retrieve encrypted content
and related decryption keys; storing such encrypted content and decryption
keys; and producing another access information to provide a mapping
between the encrypted content and the decryption keys—an abstract idea.
As a result, we conclude each of claims 1, 11, and 21 does not recite
additional elements that integrate the judicial exception into a practical
application. See Guidance, Step 2A, Prong 2.

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Step 2B
Turning to Step 2B of the Guidance (Alice step two), Appellant argues
the claims are patent eligible under Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018). See Appeal Br. 13–14; Reply Br. 5, 12–14.
We disagree. Appellant’s argument about “all of the distinguishing
limitations over the cited prior art” (Reply Br. 12; see also Appeal Br. 14;
Reply Br. 5) is unpersuasive, because the italicized limitations are part of the
abstract idea—they do not qualify as the “additional” elements of the claims.
See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (explaining the Alice “Court only assessed whether the claim
limitations other than the invention’s use of the ineligible concept to which it
was directed were well-understood, routine and conventional” and “did not
consider whether it was well-understood, routine, and conventional to
execute the claimed intermediated settlement method on a generic
computer”) (emphasis added).
Likewise, Appellant’s argument that “the office action fails to identify
. . . support from any references that the claimed invention is directed to
well-understood, routine, or conventional technique known in the art”
(Appeal Br. 14) is unpersuasive. In particular, Appellant has not
demonstrated case law requires the Examiner to show “the claimed
invention is directed to well-understood, routine, or conventional technique
known in the art” (Appeal Br. 14). In any event, the Examiner cites support
to show the additional elements were well-understood, routine, or
conventional (Ans. 9–10 (among other things, citing Burns, US
2012/0150812; Penugonda et al., US 9,930,390; MPEP 2106.05(f)), and
Appellant does not persuasively dispute such findings.
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Further, Appellant’s argument about prior art rejection (Appeal Br.
14; Reply Br. 5, 12) is unpersuasive, because a prior art rejection is
determined under 35 U.S.C. § 102 and § 103, which are different statutory
requirements. As the Supreme Court emphasizes: “[t]he ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89
(emphasis added). Our reviewing court further guides that “[e]ligibility and
novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).
As discussed above, all of the italicized limitations are part of the
abstract idea, and claim 1 does not include any additional elements.
Independent claim 11 recites the additional elements of “a server resource
from which to distribute content; gateway hardware to provide a subscriber
access to the server resource; and computer processor hardware operable to”
perform functions similar to the abstract processes of claim 1. Likewise,
independent claim 21 recites the additional element of “[c]omputer-readable
storage hardware having instructions stored thereon, the instructions, when
carried out by a computer processor hardware, cause the computer processor
hardware to . . . .” For the reasons discussed above with respect to Step 2A,
Prong 2, all of the additional elements were well-understood, routine, or
conventional in the field.
Further, Appellant’s arguments are unpersuasive, as Appellant does
not provide sufficient objective evidence to support the argument that the
additional elements were not well-understood, routine, or conventional in the
field. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“attorney
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argument [is] not the kind of factual evidence that is required to rebut a
prima facie case of obviousness”); Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977) (“Argument of counsel cannot take the place of evidence
lacking in the record.”). As a result, Appellant’s argument that “the claimed
invention includes unconventional operations/limitations that confine the
invention to a particular application . . . as required by Alice, Mayo” (Appeal
Br. 14 (emphasis omitted)) is unsubstantiated.
To the extent Appellant’s argument (Appeal Br. 14) relates to pre-
emption, that argument is unpersuasive, because
[w]hile preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility . . . . Where a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully
addressed and made moot.

Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–
63 (Fed. Cir. 2015) (“that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract”).
Appellant cites Diehr (Appeal Br. 14), but does not persuasively
explain why that case is applicable here. In Diehr, the U.S. Supreme Court
determines an industrial process of transforming uncured synthetic rubber
into cured rubber is patent eligible:
The respondents’ claims were not directed to a mathematical
algorithm or an improved method of calculation but rather
recited an improved process for molding rubber articles by
solving a practical problem which had risen in the molding of
rubber products.
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Application 15/900,928

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. . . .
[A] physical and chemical process for molding precision
synthetic rubber products falls within the § 101 categories of
possibly patentable subject matter. That respondents’ claims
involve the transformation of an article, in this case raw, uncured
synthetic rubber, into a different state or thing cannot be
disputed. The respondents’ claims describe in detail a step-by-
step method for accomplishing such, beginning with the loading
of a mold with raw, uncured rubber and ending with the eventual
opening of the press at the conclusion of the cure. Industrial
processes such as this are the types which have historically been
eligible to receive the protection of our patent laws.
Diehr, 101 S. Ct. at 1054–1055.
Unlike the claims of Diehr, the independent claims do not address the
problem of “an improved process for molding rubber articles” or similar
industrial processes. Id. at 1054. Nor do the independent claims involve
“the transformation of . . . raw, uncured synthetic rubber, into a different
state or thing” or other similar transformations. Id. at 1055. Therefore,
Diehr is inapplicable here.
Finally, Appellant’s argument that “[i]n contrast to Easyweb, the
claimed invention includes a novel and nonobvious improvement over
conventional technology” (Appeal Br. 14) is unsubstantiated, as Appellant
has not shown the claimed invention indeed “includes a novel and
nonobvious improvement over conventional technology” (Appeal Br. 14).
To the contrary and as discussed above, the additional elements are
conventional computer devices for carrying out the abstract idea and
performing the basic functions of distributing data and accessing resources.
As a result, Appellant has not persuaded us the Examiner erred with
respect to the Guidance’s Step 2B analysis. See Guidance, Step 2B.
Appeal 2020-002572
Application 15/900,928

20
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claims 1, 11, and 21 under
35 U.S.C. § 101.
For similar reasons, we sustain the Examiner’s rejection of dependent
claims 3–10, 12–20, 22–27, 29, and 30 under 35 U.S.C. § 101, as Appellant
does not advance separate substantive arguments about those claims.

35 U.S.C. § 102
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in finding the cited portions of
Rothschild disclose “utilize first content access information to retrieve
segments of encrypted content associated with a request for recording of
content,” as recited in claim 11. See Appeal Br. 65–66; Reply Br. 39.
The Examiner cites Rothschild’s Figure 3 (block 305) and paragraphs
75, 82, 102, and 155 for disclosing the disputed limitation. Final Act. 10–
11. The Examiner also confirms “the content of the user request of
Rothschild ¶ 75 has always been cited for the first content access
information.” Ans. 20.
However, Rothschild explains the user request may be received to
“record a content asset” (Rothschild ¶ 75)—not “retrieve segments of
encrypted content associated with a request for recording of content,” as
required by claim 11. Further, the disputed limitation recites “utilize first
content access information to retrieve segments of encrypted content
associated with a request for recording of content” (emphasis added), and
the Examiner’s mapping does not address the claimed “request.”
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As a result, we agree with Appellant that the cited portions of
Rothschild do not disclose “utilize first content access information to
retrieve segments of encrypted content associated with a request for
recording of content,” as required by claim 11. See Appeal Br. 65–66;
Reply Br. 39.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s anticipation rejection of independent claim 11, and
claims 14–16 and 18–21 for similar reasons.

35 U.S.C. § 103
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in finding the cited portions of
Rothschild teach “utilizing first content access information to retrieve: i)
segments of encrypted content associated with a request, and ii) copies of
original decryption keys to decrypt the segments of encrypted content,” as
recited in claim 1 (emphasis added). See Appeal Br. 16–18; Reply Br. 15–
20.
The Examiner cites Rothschild’s Figure 3 (block 305) and paragraphs
75, 82, 102, and 155 for teaching the disputed limitation. Final Act. 15–16.
The Examiner finds “the data within the request of Rothschild ¶ 75 is the
‘first content access information.’” Ans. 34.
However, Rothschild explains the request (from paragraph 75) may be
received to “record a content asset” (Rothschild ¶ 75)—not “retrieve . . .
segments of encrypted content associated with a request,” as required by
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Application 15/900,928

22
claim 1. Further, the disputed limitation recites “utilize first content access
information to retrieve . . . segments of encrypted content associated with a
request” (emphasis added), and the Examiner’s mapping does not address
the claimed “request.”
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s obviousness rejection of independent claim 1.
Dependent claims 3–10, 12, 13, 17, 22–27, 29, and 30 depend from
independent claims 1 and 11, and the Examiner cites additional references
for rejecting some dependent claims. Final Act. 15–27. However, the
Examiner relies on Rothschild in the same manner discussed above in the
context of claims 1 and 11, and does not rely on the additional references in
any manner that remedies the deficiencies of the underlying rejections of
claims 1 and 11. Id.
Accordingly, we reverse the Examiner’s obviousness rejection of
dependent claims 3–10, 12, 13, 17, 22–27, 29, and 30.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1, 3–27, 29, and
30 under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 6, 7, 16, 17, and
26 under 35 U.S.C. § 112(b) as being indefinite.
We affirm the Examiner’s decision rejecting claims 1, 3–27, 29, and
30 under the non-statutory double patenting doctrine.
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Application 15/900,928

23
We reverse the Examiner’s decision rejecting claims 11, 14–16, and
18–21 under 35 U.S.C. § 102 over Rothschild.
We reverse the Examiner’s decision rejecting claims 1, 3–6, 8–10,
12–13, 22–27, 29, and 30 under 35 U.S.C. § 103 over Rothschild and Wang.
We reverse the Examiner’s decision rejecting claims 7, 9, and 26
under 35 U.S.C. § 103 over Rothschild, Wang, and Burns.
We reverse the Examiner’s decision rejecting claims 17 and 19 under
35 U.S.C. § 103 over Rothschild and Burns.
We reverse the Examiner’s decision rejecting claims 18–20 under 35
U.S.C. § 103 over Rothschild and Britt.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision rejecting claims 1,
3–27, 29, and 30. See 37 C.F.R. § 41.50(a)(1).

Appeal 2020-002572
Application 15/900,928

24
In summary:

Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3–27, 29, 30 101 Patent Eligibility 1, 3–27,
29, 30

6, 7, 16, 17, 26 112(b) Indefiniteness 6, 7, 16,
17, 26

1, 3–27, 29, 30 Non-statutory
Double Patenting
1, 3–27,
29, 30

11, 14–16, 18–
21
102(a)(2) Rothschild 11, 14–16,
18–21
1, 3–6, 8–10,
12–13, 22–27,
29, 30
103 Rothschild, Wang 1, 3–6, 8–10,
12–13, 22–
27, 29, 30
7, 9, 26 103 Rothschild, Wang,
Burns
7, 9, 26
17, 19 103 Rothschild, Burns 17, 19
8–10 103 Rothschild, Wang,
Britt
8–10
18–20 103 Rothschild, Britt 18–20
Overall
Outcome
1, 3–27,
29, 30

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED